Cases from United States Court of Appeals for the Ninth Circuit

United States Court of Appeals for the Ninth Circuit
Criminal Conviction Affirmed for Trade Secret Theft

Reminding all that misappropriating a trade secret can not only constitute a crime, but also that the intent to reap an economic benefit is sufficient to sustain a conviction under 18 USC Section 1832, the Ninth Circuit upheld the criminal conviction of Suibin Zhang for the theft of Marvell Semiconductor Inc.’s trade secrets.

After a bench trial, Zhang was found guilty and sentenced to three months in prison followed by three months of supervised release, 200 hours of community service, and $75,000 in restitution. Zhang appealed, challenging the sufficiency of the evidence and contending that his Sixth Amendment right to a public trial was violated.

On appeal, the Ninth Circuit held that there was, in fact, sufficient evidence, beyond a reasonable doubt, that Marvell took “reasonable measures” to protect its trade secrets. Marvell did so by advising users of the existence of their trade secrets and by limiting access on a need to know basis and controlled access through passwords. The Court also held that, although Zhang did not personally sign the Marvell non-disclosure agreement, he accepted a limited license agreement that incorporated its terms.

The Court further held that even though Zhang never sold the documents or sent around economically valuable secrets, sufficient evidence established that he intended to reap an economic reward. The Court held this same evidence established an intent to injure Marvell, enough to uphold the criminal conviction. Intent, this case, was key.

United States Court of Appeals for the Ninth Circuit
9th Circuit: No Competitors Needed for Trade Secrets to Exist Under the EEA

United States v. Chung, 659 F.3d 815, 826 (9th Cir. 2011)
Docket No. 10-50074
Federal Court of Appeals for the 9th Circuit
Decided: September 26, 2011, Judge Susan P. Graber

In a 2011 opinion, the Court of Appeals for the Ninth Circuit affirmed the first trial court conviction under the Economic Espionage Act. Notably, the appellate court in United States v. Dongfan Chung addressed the independent economic value requirement under 18 U.S.C §1839(3)(B) as either actual or potential. In line with the statutory language, the Court asserted that the owner of secret information need not have actual competitors in order to rightfully protect its economic value.

In US v. Chung, the defendant Dongfan “Greg” Chung, a former engineer for the US-contractor Boeing, was found in possession of over 300,000 Boeing documents, including six documents containing Boeing trade secrets. On appeal of his conviction, Chun argued insufficient evidence as to the existence of any Boeing trade secrets within the documents he possessed. The court looked specifically at four Boeing documents relating to a NASA space-shuttle antenna. Judge Graber found that Boeing maintained the secrecy of the particular Boeing information and enacted reasonable protective measures to maintain secrecy. Most notably, the Court endeavored in an extensive analysis of he economic value required for such information to be trade secrets. While the EEA’s definition of trade secret is grounded upon the standard outlined in the Uniform Trade Secrets Act (UTSA), the text of §1839(3)(B) further defines the economic value of trade secret information as either actual or potential, and does not mention the existence of competitors.

The court reasons that such information “could assist a competitor in understanding how Boeing approaches problem-solving and in figuring out how best to bid on a similar project in the future, for example, by underbidding Boeing on tasks at which Boeing appears least efficient.” Thus the Court held Boeing’s secret information independently valuable not for Boeing’s potential use, but for use of such information by any potential Boeing competitor. Thus the Ninth Circuit held that under the EEA, companies need not have actual competitors in order to derive economic value from maintaining the secrecy of certain information.

United States Court of Appeals for the Ninth Circuit
The Court of Appeals for the Ninth Circuit decides to rehear United States v. Nosal en banc, ordering district courts to ignore panel decision

On April 10, 2012, Chief Judge Alex Kozinski, writing for the Ninth Circuit Court of Appeals (en banc), issued a final decision in the case United States v. Nosal, narrowly interpreting the scope of the Computer Fraud and Abuse Act (CFAA). Chief Judge Kozinski’s opinion made clear his unwillingness to expand the reach of the CFAA for fear of criminalizing a wide range of seemingly innocuous behavior that Congress did not intend.

The particular facts of this case are not nearly as significant as the question of law and statutory interpretation presented, but briefly, the United States government brought charges against defendant David Nosal and his alleged accomplices for violations of the CFAA. Nosal was a former employee of executive search firm, Korn/Ferry International, while his suspected co-conspirators were current employees of the firm. The twenty-count superseding indictment alleged that current Korn/Ferry employees transferred confidential and proprietary information to Nosal from a confidential database of executives and companies, which was developed and maintained by Korn/Ferry and considered to be of great value to the company as against competitors.

The legal question presented was whether the employees “exceeded [their] authorized access” to the company computer system, within the meaning of the CFAA, when they transmitted confidential Korn/Ferry information to Nosal in violation of their employer’s computer use restrictions. The district court denied Nosal’s motion to dismiss the indictment at first, but later dismissed most of the counts against him after granting his motion to reconsider in light of the holding in LVRC Holdings LLC v. Brekka, 581 F.3d 1127 (9th Cir. 2009). However, a 2-1 panel decision of the Court of Appeals for the Ninth Circuit reversed the district court and reinstated counts of the indictment. The majority found factual distinctions from the present case to Brekka and held that “under the CFAA, an employee accesses a computer in excess of his or her authorization when that access violates the employer’s access restrictions.” 642 F.3d at 789.

On October 27, 2011, the Ninth Circuit Court of Appeals granted Nosal’s petition for rehearing en banc, clarifying that the previous three-judge panel decision would hold no precedential value. Oral arguments were heard on December 15, 2011, and despite the circuit split now created over the scope of the CFAA, the en banc court affirmed the district court’s dismissal of several counts of the indictment. The April 10, 2012 decision held that “exceeds authorized access” in the CFAA pertains to violations of restrictions on access to information, and not restrictions on its use.